Feature Articles

December Issue 2002

LEGAL Q & A - For the Artsby Edward Fenno, Copyright Attorney

Question: I heard that Tiger Woods sued an
artist for not paying Tiger royalties on a print the artist made
of Tiger playing golf. Is that true? If so, when does an artist
have to ask a celebrity's permission to photograph, paint or sell
pictures of the celebrity?

Answer: It is true that Tiger sued. But he
lost. Still, the question is important because celebrities, and
all of us non-celebrities, have a "right of publicity"
under the law in most states. This is a form of privacy and property
right, and may be infringed upon when someone uses our name or
"likeness" for their own (usually commercial) benefit
without our consent. The right of publicity is said to "protect
the celebrity's pecuniary interest in the commercial exploitation
of his identity."

Relying upon this right of publicity, Tiger
Woods' exclusive licensing agent, ETW Corp. ("ETW" is
short for "Eldrick 'Tiger' Woods," Tiger's real name),
sued a sports artist for making and selling limited edition prints
of his painting depicting images of Tiger playing golf. Tiger's
agent argued that any use of Tiger's name or likeness must be
with the agent's permission. Tiger and his agent lost, however,
because the artist's right to express himself under the First
Amendment's freedom of speech trumped Tiger's right of publicity.
But free speech won't win in every case.

The dividing line that is used most often by
the courts is one of "endorsement." When an artist uses
the image of the celebrity to endorse a product or the artist,
the artist has usually violated the celebrity's right of publicity,
despite free speech interests in the work. For example, in a recent
case, clothing company Abercrombie & Fitch used the names
and images of some surfers in its catalog without their permission.
The surfers sued under the right of publicity, and won on the
grounds that Abercrombie & Fitch was essentially using them
to endorse and sell its clothing without their permission. The
court found Abercrombie's catalog to be more a proposal for a
commercial transaction than a work of art. Thus, the surfers'
rights of publicity won out over the company's rights of free
speech and expression.

Despite the general rule that "endorsement"
is the dividing line, a number of courts have also permitted celebrities
to recover when their literal likeness was used by the artist
for commercial purposes, even outside of advertising or promotion.
For example, the Supreme Court of California ruled last year that
a man who created a lithograph of the "Three Stooges"
and used it to make and sell silk-screened t-shirts violated the
right of publicity of the actors who portrayed the "Three
Stooges" under California's right of publicity statute. (It
should be noted that the "right of publicity" is sometimes
treated only as a right in the living, but California extended
these rights to the heirs of the dead by statute.) The California
Supreme Court found that "depictions of celebrities amounting
to little more than the appropriation of the celebrity's economic
value are not protected under the First Amendment." The
court then set forth the following test:

"When artistic expression takes the form
of a literal depiction or imitation of a celebrity for commercial
gain ... without adding significant expression ..." the [statutory]
right of publicity is infringed.

The court also stated this test as:

"Whether a product containing a celebrity's
likeness is so transformed that it has become primarily the artist's
own expression rather than the celebrity's likeness."

Although the artist in the "Three Stooges"
case argued that all portraiture involves creative decisions,
and therefore no portrait portrays a mere literal likeness without
some "transformation," the court disagreed and ruled
against the artist. In addition, the court commented on the Tiger
Woods decision (made by a federal court in Ohio), stating that
"We disagree with the [Tiger Woods] court if its holding
is taken to mean that any work of art, however much it trespasses
on the right of publicity and however much it lacks additional
creative elements, is categorically shielded from liability by
the First Amendment."

In a somewhat similar case, the United States
Supreme Court held that a television station's unauthorized videotaping
and news broadcast of the entire 15 second act of the "human
cannonball," performed at a local fair, violated the entertainer's
right of publicity because it involved "the appropriation
of the very activity by which the entertainer acquired his reputation
in the first place." The Court added that "much of [the]
economic value [of the entertainer's talents] lies in the right
of exclusive control over the publicity given to his performance;
if the public can see the act free on television, it will be less
likely to pay to see it at the fair."

So, where does this leave artists in the Carolinas?
The law concerning the right of publicity is not as well developed
in the Carolinas as in many other parts of the country. Neither
North nor South Carolina has a right of publicity statute; and
although South Carolina courts have essentially recognized the
right of publicity by prohibiting the "wrongful appropriation
of personality," South Carolina courts have never had occasion
to decide such a case. North Carolina courts have addressed the
issue once, and held that a person has a right to prohibit the
unauthorized use of his or her photograph "in connection
with an advertisement or other commercial enterprise." In
that case, a woman's photograph was used in an advertisement.

Due to the paucity of law on the subject in
the Carolinas, local artists should be prepared to follow the
decisions of other jurisdictions - including California. As a
result, painters are likely in a better position than photographers
or videographers - since paintings of people are more likely to
be "transformative" than photographs or videotapes.
In the "Three Stooges" case, for example, the California
Supreme Court specifically noted that Andy Warhol's paintings
of celebrities were sufficiently "transformative" to
avoid the right of publicity, as are "works of parody or
other distortion." On the other hand, the sale of photographs
of people (other than to the newsmedia, who generally have additional
First Amendment protection), or the sale of videotaped sporting
events or similar performances may well require the permission
of the personalities involved - even if not used for advertisement
or other endorsement.

Edward Fenno is an intellectual property
and media attorney with the law firm of Moore & Van Allen.
He represents a number of artists, as well as clients in the publishing
and technology industries. He is a periodic contributor to Carolina Arts on legal issues for artists. Mr. Fenno
can be reached in Charleston, SC, at 843/579-7040. This article
is copyright * 2002 by Moore & Van Allen, PLLC; published
by permission.